[Patentpractice] Continuation from provisional?

[Carl Oppedahl]

As a matter of terminology, what we are talking about is not 
/*priority*/. What we are talking about is /*domestic benefit*/ claims 
under your choice of 35 USC § 119(e) or 35 USC § 120.

Close reading of those sections of 35 USC reveal that it is legally 
impossible for a US non-provisional application to be a "continuation" 
of a US provisional.  If there is going to be any connection between 
your US provisional and your US non-provisional, that connection is 
limited to 35 USC § 119(e).

It would be possible to engineer something that would look like a US 
non-provisional being a continuation of a US provisional.  You would 
obtain a grant of a petition to convert the US provisional into a US 
non-provisional.  At that point you could tie the converted provisional 
to the later US non-provisional by means of 35 USC § 120.

It looks like you are maybe sort of asking "if I were to run down to the 
court house seeking a declaratory judgment that this US patent expires a 
year earlier than you would think, because of this word salad in the 
specification of the patent, and because of this word salad on the front 
page of the publication, and because of this word salad in the ADS, 
would you win?"

My prediction, assuming the patent owner were represented by competent 
counsel, is the court would decline to so judge.   My prediction is that 
the court would say something along these lines:

    It is impossible for a US non-provisional application to claim
    domestic benefit from a US provisional under 35 USC § 120.   The
    patent term of a patent issuing therefrom runs from the earliest US
    non-provisional filing date, and that is not the same thing as the
    filing date of any US provisional application.

On 5/3/2024 10:56 AM, Katherine Koenig via Patentpractice wrote:
>
> For priority/benefit claims, does the ADS or statement in the 
> Specification control?
>
> On a published application, the Related US Application Data (1^st 
> page) states the application is a “continuation of application No. 
> [X], filed on [Date].” That App. No. [X] is a provisional, 63-series.  
> The ADS also provided that the application is a “continuation” of App. 
> No. [X] (provisional, 63-series).  The application was filed by a pro 
> se inventor, so this was (I assume) an inadvertent error.
>
> However, the body of the Specification sates “This application is a 
> nonprovisional filing with priority to a provisional application, No. 
> [X], filed on [Date].”
>
> Can the application properly be considered to be a continuation of the 
> earlier provisional for patent term calculation?  In other words, does 
> patent term begin at the provisional filing date or the current 
> application filing date?
>
> Best regards,
>
> Katherine
>
> Dr. Katherine Koenig
>
> /Registered Patent Attorney/
>
> Koenig IP Works, PLLC
>
> 2208 Mariner Dr.
>
> Fort Lauderdale, FL 33316
>
> (954) 903-1699
>
> katherine at koenigipworks.com <mailto:katherine at koenigipworks.com>
>
> /Targeted Intellectual Property Strategy/
>
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